1/Ob 



^1 



Liability of the United States for use of Patented Inven- 
tions ; with Special Reference to the Act of Congress 
Entitled, ''An iVct To Provide Additional Pro- 
tection for Owners of Patents of the United 
States, and for other Purposes," 
Approved June 25, 1910. 



A Paper read before the 

Patent Trademark and Copyright Section 

of the American Bar Association, 

August 29, 1910. 

By GEORGE A. KING, 
Washington, D. C. 



KING & king ; 

ATTORNEYS AND COUNSELLORS AT LAW, 

No. 728 Seventeenth Street 

WASHINGTON, D. C. 



Liability of the United States for use of Patented Inven- 
tions ; with Special Reference to the Act of Congress 
Entitled, ''An Act To Provide Additional Pro- 
tection for Owners of Patents of the United 
States, and for other Purposes,'* 
Approved June 25, 1910. 



A Paper read before the 

Patent Trademark and Copyright Section 

of the American Bar Association, 

August 29, 1910. 

By GEORGE A. KING, 
Washington, D. C. 



KING & KING, 

ATTORNEYS AND COUNSELLORS AT LAW, 

No. 728 Seventeenth Street 

WASHINGTON, D. C. 






\ 



<A 



Copyright, 1910, 
By King & King. 



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•^* 



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:Ci.A27;r^t;54 



Table of Contents. 



^. 



Text of Act June 25, 1910 5 

Introductory 7 

Remedies Existing at the Date of the Act 9 

A. Suit against the Officer 10 

B. Suit against the United States 14 

C. Reference for Findings of Fact 16 

D. Summary 18 

Liability of the United States under the Act 19 

A. General 19 

B. Jurisdiction and Appeal 20 

C. Limitation of Six Years 21 

D. Reasonable Compensation 23 

E. Assignment of Patents and of Claims 25 

First Proviso. Articles Already in Possession of Government 26 

Second Proviso. Defenses of the United States 28 

Third Proviso . Inventions of Government Employees 29 

Conclusion 35 

Appendix 38 

List of Opinions of Court of Claims in Patent Cases 38 

List of Opinions of Supreme and other Courts in Suits against 
Officers of United States for Infringement of Patents 44 

List of Opinions of Attorneys-General Relative to Use of Patented 
Inventions by United States ■ 47 



[36 U. S. Statutes, 851, 852. Paragraphed for Convenience.] 

An Act To provide additional protection for 
owners of patents of tlie United States, and 
for other purposes. 

Se it enacted^ etc., That wlienever an in- 
vention described in and covered by a patent 
of the United States shall hereafter be used 
by the United States without license of the 
owner thereof or lawful right to use the same, 
such owner may recoA^er reasonable compen- 
sation for such use by suit in the Court of 
Claims : 

JProvidedf however^ That said Court of Claims 
shall not entertain a suit or reward compen- 
sation under the provisions of this Act where 
the claim for compensation is based on the 
use by the United States of any article here- 
tofore ownetl, leased, used by, or in the pos- 
session of the United States : 

JProvided further ^ That in any such suit the 
United States may avail itself of any and all 
defenses, general or special, which might be 
pleaded by a defendant in an action for in- 
fringement, as set forth in Title Sixty of the 
Revised Statutes, or otherwise : 

And pi'ovided further^ That the benefits of 
this Act shall not inure to any patentee, who, 
when he makes such claim is in the employ- 
ment or service of the Government of the 
United States; or the assignee of any such 
patentee ; nor shall this Act apply to any de- 
vice discovered or invented by such employee 
during the time of his employment or service. 

Approved, June ^5, 1910. 



Liability of the United States for use of Patented 
Inventions; with Special Reference to the Act 
of Congress Entitled, ''An Act to Provide 
Additional Protection for Owners of 
Patents of the United States, and 
for Other Purposes,'' Ap- 
proved June 25, 1910. 



A Paper read before the 

Patent Trademark and Copyright Section 

of the American Bar Association, 

August 29, 1910. 

By GEORGE A. KING, 
Washington, D. C. 



Introductory. 

The language of the Constitution empowering Con- 
gress 

" To promote the Progress of Science and useful Arts, 
by securing for limited Times to Authors and Inventors 
the exclusive Right to their respective Writings and Dis- 
coveries," 

clearly imports that the right thus secured is to be exclu- 
sive against the Government itself as well as against all 
others. The statute law of the United States contains 
several recognitions of this principle. Thus in 1860 Con- 
gress enacted by section 3 of the act of June 23, 1860, 
12 Stat. L. 104: 

*' No arms, nor military supplies whatever, which are 
of a patented invention, shall be purchased, nor the right 
of using or applying any patented invention, unless the 



8 

game shall be authorized by law, and the appropriation 
therefor explicitly set forth that it is for such patented 
invention . ' ' 

And by section 1537 of the Revised Statutes, originally 
enacted in 1861 : 

" No patented article connected with marine engines 
shall hereafter be purchased or used in connection with 
any steam-vessels of war until the same shall have been 
submitted to a competent board of naval engineers, and 
recommended by such board, in writing, for purchase 
and use." 

By the act of March 3, 1893, 27 Stat. L. 731, it was 
provided that all balances of appropriations on hand July 
1, 1893, for armor and armament of vessels previously 
authorized shall continue available for that purpose, 

'' including the purchase of or payment for the right 
to use and employ such patented processes and to manu- 
facture and use such patented devices, apparatus, models 
and designs as may, in the judgment of the Secretary of 
the Navy, be necessary or desirable to increase the effici- 
ency of the armor and armament for naval vessels." 

See opinion of the Attorney-General construing this 
proviso, 27 Ops. 173. 

And each annual Fortification and Ordnance appropria- 
tion act from 1895 to 1910, inclusive, has contained this 
provision : 

"Board of Ordnance and Fortification: * * * 
That before any money shall be expended in the construc- 
tion or test of any gun, gun carriage, ammunition, or 
implements under the supervision of the said board, the 
board shall be satisfied, after due inquiry, that the Gov- 
ernment of the United States has a lawful right to use the 
inventions involved in the construction of such gun, gun 
carriage, ammunition, or implements, or that the con- 
struction or test is made at the request of a person either 
having such lawful right or authorized to convey the same 
to the Government." (June 23, 1910, 36 Stat. L. 599.) 



9 

Of late years the constantly enlarging field of operation 
of the National Government is leading to a greatly 
increased use of patented inventions. 

As was very justly said in the able report of the Com- 
mittee of this Association on Patent, Trademark and 
Copyright Law, of which you (Judge Robert S. Taylor, 
of Fort Wayne, Indiana,) are Chairman: 

" The matter is one of greater and wider interest than 
might be supposed. The Government is not only an 
enormous consumer, but likewise a very large manu- 
facturer of patented articles." 

The provisions for compensation for such use have been , 
up to the present time, remarkably uncertain and defec- 
tive. Congress has enacted at the session just closed an 
important statute granting a clear and certain judicial 
remedy by way of compensation for the use of patented 
inventions in the service of the Government. 

A bill similar in terms passed the Senate in the 59th 
Congress; passed both houses without receiving the 
approval of the President in the 60th Congress; and 
has finally passed both houses, and become a law by the 
approval of the President in this, the 61st Congress. Its 
enactment was strongly recommended in an able report 
of the committee of this Association on Patent, Trademark 
aud Copyright Law, approved by resolution of the Associ- 
ation. (Report of the American Bar Association, Vol. 
34, 1909, pp. 544-548.) 

The full text of this statute is prefixed to this article. 
To its proper understanding it is essential to consider the 
existing condition of the law at the date of its enactment. 

Remedies Existing at the Date of the Act. 

The remedies of the owner of a patent in case of the 
use of a patented invention by officers of the United States 
were at the date of the enactment of this statute, — 



10 

A . By suit in a circuit court against the officer making 
use of the patented invention. 

B. By suit in the Court of Claims against the United 
States. 

C. By reference to the Court of Claims for findings of 
fact for the information of Congress. 

A. Suit Against the Officer. 

In Cammeyer v. Neivton, Fed. Cas. No. 2244, 2245, 
affirmed 94 U. S. 225, an officer of the Engineer Corps of 
the Army was sued for infringement of a patent for an 
improved method of blasting rocks under water. The 
Supreme Court, 94 U. S. 234, 235, said: 

' * Agents of the public have no more right to take such 
private property than other individuals under that jDro- 
vision, as it contains no exception warranting any such 
invasion of the private rights of individuals. ^ * * 

'^ Suppose that is so, then it follows that the decision 
in the case before the court must depend upon the ques- 
tion of infringement." 

The Supreme Court decided, as did the circuit court, 
that there was no infringement of patent. The language 
just quoted clearly shows that if infringement had been 
established, the plaintiff would have succeeded. 

In the prolonged litigation which took place under the 
Norton patent for an instrument for postmarking letters 
and cancelling stamps, the circuit court granted an 
accounting for past infringements and injunction against 
future ones, against the Postmaster of New York, as if 
he were a private defendant. (Campbell v. James, Fed. 
Case 2361; 2 Fed. Rep. 338; 3 Fed. Rep. 513; 5 Fed. 
Rep. 806; 31 Fed. Rep. 525. See also Secombe v. Camp- 
bell, 5 Fed. Rep. 804; Campbell v. Ward, 12 Fed. Rep. 



11 

150, and Shavor v. United States, 4 C. Cls. 440; all 
involving the same patent.) 

This case went to the Supreme Court. That court 
expressed considerable doubt whether any such proceed- 
ing could be sustained, as in effect a suit against the 
United States, though in form against the officer. It dis- 
posed of the case on another ground, holding the patent 
to be void as a reissue with a broader claim than that of 
the original patent (James v. Campbell, 104 U. S. 356, 
359). 

This decision was not regarded by the circuit courts as 
an authority against the remedy by accounting and injunc- 
tion. The circuit court for the District of Connecticut in 
1883 sustained such a bill based on a patent for improve- 
ment in metallic cartridges against the master armorer of 
the United States Armory at Springfield, Massachusetts 
{Forehand v. Forter, 15 Fed. Eep. 256) . And the circuit 
court for Massachusetts, in what Mr. Walker (Patents, 
3d edition, §393) has called "a learned and elaborate 
opinion of Judge Colt," in 1891, sustained a bill against 
the same officer for infringement of a patent for improve- 
ment in breech-loading fire-arms {Head v. Forter, 48 
Fed. Rep. 481). 

In Hollister v. Benedict Manufacturing Company, 113 
U. S. 59, where the circuit court had sustained a bill 
against a revenue officer charged with infringement of a 
patent for improvements in revenue marks or labels (4 
Fed. Rep. 83) , the Supreme Court reversed the decree on 
the ground that the alleged improvement was not of suf- 
ficient hovelty and skill to be patentable. It was sug- 
gested also that the suit should be against the United 
States, and not against the officer, 

It was said, 113 U. S. page 67: 

'' If the right of the patentee was acknowledged, and, 
without his coiisent, an officer of the Government, acting 



12 

under legislative authority, made use of the invention in 
the discharge of his official duties, it would seem to be a 
clear case of the exercise of the right of eminent domain, 
upon which the law would imply a promise of compen- 
sation, an action on which would lie, within the jurisdic- 
tion of the Court of Claims, such as was entertained and 
sanctioned in the case of The United States v. The Great 
Falls Manufacturing Co. 112 U. S. 645. And it may be 
that, even if the exclusive right of the patentee were 
contested, such an action might be brought in that court, 
involving all questions relating to the validity of the 
patent." 

Later, in Belknap v. Schild, 161 U. S. 10, and Inter- 
national Postal Supply Company v. Bruce, 194 U. S. 601, 
it was decided that a bill for an injunction to restrain 
officers of the United States from using property owned 
or leased by the Government on the ground of infringe- 
ment of a patent could not be sustained, as being in effect 
a suit to enjoin the United States from making use of its 
own property. 

In each case there was a vigorous dissenting opinion 
written by Mr. Justice Harlan and concurred in by 
another justice. He therein pointed out that this ruling 
taken in connection with the doctrine announced in the 
Schillinger case, 155 U. S. 163, and the Russell case, 182 
U.S. 516 (post, p. 16) , that there can be no recovery 
in the Court of Claims for an infringement unaccom- 
panied by circumstances from which a contract can be 
implied left patentees practically without remedy for the 
infringement of their patents by officers of the Gov- 
ernment. 

Sir W. G. Armstrong Whitworth Company, an English 
concern, brought two actions at law against the Chief of 
the Bureau of Ordnance and other officers of the United 
States Navy for infringement of a patent for trunnion 
bearings for heavy ordnance. The case was tried before 



13 

a jury in 1900. Notwithstanding the infringement of 
the patent was committed by the defendants only in the 
course of their official action for the United States Gov- 
ernment, the court held them liable. Damages were 
awarded by the judgment of the court, and were paid. 
{Armstrong v. O^Neil, Supreme Court D. C, at LawNos. 
43,173, 43,174, unreported.) 

Quite recently the question has arisen whether the 
owner of a patent may not, without invoking the inter- 
ference of the court with existing property of the United 
States, successfully ask for an injunction to prevent future 
infringement of his patent by such officers in respect 
of property not yet in being, or not yet in the possession 
of the United States, but in the production or purchase of 
which it is apprehended that there will be an infringe- 
ment of the patent. In Kriqyp Company v. Crozier, 32 
App. D. C. 1, decided in 1908, a German corporation own- 
ing letters patent of the United States for devices employed 
in field guns and their carriages applied for an injunction 
to restrain the Chief of Ordnance from manufacturing 
guns and carriages in infringement of those patents. No 
accounting was asked for past infringements, and no 
injunction against the use of any existing property of 
the United States. It was held that such an intended 
violation of private rights by an officer of the Government 
might and should be restrained by injunction. This 
case has gone by writ of certiorari to the Supreme Court, 
and is still pending there. 

The distinction taken in that case is maintained, and 
some brief but instructive comments made on the ruling 
in the Krupp case in a still later decision in Houpt v. 
Wright^ 32 App. D. C. 408, where the same court refused 
an injunction the effect of w^hich would be to restrain the 
United States from the use of its own property. 



14 

B. Suit Against the United States. 

The jurisdiction of the Court of Claims extends by 
Eevised Statutes, section 1059, first paragraph, to '^all 
claims founded upon any law of Congress, or upon any 
regulation of an executive department, or upon any con- 
tract expressed or implied with the government of the 
United States ; " to which has been added another by the 
so-called Tucker act of 1887, section 1, first paragraph, 
24 Stat. L. 505, " all claims founded upon the Constitu- 
tion of the United States." 

An important decision allowing recovery against the 
Government for use of a patented invention was made by 
the Court of Claims in 1879 in the case of McKeever, 
14 C. Cls. 396. The claimant, an ofiicer of the Army, 
was the patentee of a cartridge-box. He submitted his 
invention to a board of officers appointed to consider and 
report upon the proper equipment of infantry soldiers. 
Upon the recommendation of this board the cartridge-box 
was adopted, and the article made and issued for army 
use. These facts were held to constitute an implied con- 
tract with the patentee for the use of his invention at 
a reasonable rate of roj^alty to be ascertained by the court. 
The opinion by Judge Nott, afterwards Chief Justice, con- 
tains an elaborate examination of the constitutional foun- 
dation of claims against the Government for the use of 
patented inventions, as well as of the question of the 
measure of damages. The judgment was affirmed by the 
Supreme Court without opinion in 1883, 18 C. Cls. 757. 

Mr. Walker, in the second edition of his work on 
Patents, section 391, remarks in regard to this action of 
the Supreme Court : 

''This omission to review the reasoning of the court 
below was a deserved compliment to Judge Nott, who 
delivered the opinion in the lower tribunal . That opinion 
is one of the most able patent-case opinions ever rendered 



15 

in the United States ; and not the least of its merits resides 
in the fact that the decision is confined to the precise issues 
at bar." 

A large number of subsequent decisions arising under a 
variety of circumstances have allowed a recovery wherever 
a patented invention was used, either under an express 
contract, or under circumstances which could be treated 
as constituting an implied contract. 

A chronological list of all patent cases of the Court 
of Claims, indicating the action of the Supreme Court 
w^herever the case has gone to that court, is appended to 
this paper. Nearly all of these cases are based upon an 
implied contract, consisting in the main of an offer by 
the owner of the patent to an authorized officer of the 
Government of a license to use the invention ; followed 
by some more or less clear acceptance by the government 
officer, though generally without any explicit agreement 
to pay anything. The decisions show a disposition in 
the interest of justice to impty a contract from only slight 
circumstances. 

In the case of Butler, 23 C. Cls. 335, there was no direct 
communication between the owner of the patent and the 
officers of the Government, but a contract was implied 
solel}^ from a " general usage of the War Department 
with regard to the adoption of improvements in fire- 
arms," coupled with a use of the invention by the depart- 
ment without objection on the part of the owner of the 
patent. 

The difficulty has been in the cases where there was no 
license from the owner of the patent and no acceptance 
by officers of the Government; especially where there has 
been, as in some cases, an express denial on the part of 
the officers using the invention of any right on the part of 
the owner of the patent. Cases founded upon such cir- 
cumstances have been held to be excluded from the juris- 



16 

diction of the Court of Claims, as claims, to use the 
expression of the Tucker act, section 1, 24 Stat, L. 505, 
" sounding in tort." 

This conclusion has not been reached without vigorous 
dissent on the part of several justices of the Supreme Court 
in each of the cases in which the court has so adjudged. 
(Schillinger v. United States, 155 U. S. 163; Russell y. 
United States, 182 U. S. 516.) Mr. Justice Harlan in his 
very able dissenting opinion in the Schillinger case holds 
that there is a right of recovery in such a case on the 
ground that it is a claim (in the language of the Tucker 
Act, § 1, 24 Stat. L. 505) , '* founded upon the Constitu- 
tion of the United States," 155 U. S. 179. 

Even the opinions of the majority of the court draw 
the distinction with reluctance. 

In the liussell case, 182 U. S. 516, the court said, 
page 535 : 

" If petitioners have suffered injury it has been through 
the infringement of their patent, not by a breach of con- 
tract, and for the redress of an infringement the Court 
of Claims has no jurisdiction. This doctrine may be 
technical. If the United States was a person, on the facts 
of this record (assuming, of course, the petition to be 
true) it could be sued as upon an implied contract, but 
it is the prerogative of a sovereign not to be sued at all 
without its consent or upon such causes of action as it 
chooses." 

And in the Schillinger case, 155 U. S. 168: 

" If it was the intent of Congress to grant to the court 
jurisdiction over actions against the Government for torts, 
an amending statute of but a few words would have cor- 
rected the error and removed all doubt." 

C. Reference for Findings of Fact. 
In addition to the acts defining what is known as the 
general jurisdiction of the Court of Claims, under which 



17 

it is authorized to enter judgment, there are two statutes 
which permit a reference of cases to that court. 

By the first section of the act of 1883, commonl}^ known 
as the Bowman act, 22 Stat. L. 485, either house of Con- 
gress, or any committee thereof, may refer a case to the 
Court of Claims for a finding of facts, ^ ' and the same shall 
there be proceeded in under such rules as the court may 
adopt. When the facts shall have been found, the court 
shall not enter judgment thereon, but shall report the 
same to the committee or to the house by which the case 
w^as transmitted for its consideration," 

A similar jurisdiction is conferred by the fourteenth 
section of the Tucker act, 24 Stat. L. 505; but here the 
reference must be by one house of Congress of a bill pend- 
ing therein , ' ' providing for the payment of a claim, ' ' etc. 

By that act (as amended 1910, 36 Stat. L. 837, 838), 
the court is to ' ' report to such house the facts in the case 
and the amount, where the same can be liquidated, includ- 
ing any facts bearing upon the question whether there 
has been delay or laches in presenting such claim, or 
applying for such grant, gift, or bounty, and any facts 
bearing upon the question whether the bar of any statute 
of limitation should be removed , or which shall be claimed 
to excuse the claimant for not having resorted to any 
established legal remedy, together with such conclusions 
as shall be sufficient to inform Congress of the nature and 
character of the demand, either as a claim, legal or equit- 
able, or as a gratuity, against the United States and the 
amount if any legally or equitably due from the United 
States to the claimant." 

Where, by reason of the want of a contract, express or 
implied, for the use of a patented invention, no suit will 
lie under the general jurisdiction of the court upon which 
a judgment may be rendered, there may, nevertheless, be 
a reference to the Court of Claims for findings of fact for 



18 

the information of Congress. {Forehand v. United 
States, 23 C. Cls. 477.) 

D. Summary. 

Thus, the law on the subject, before the passage of the 
recent act, was in a most unsatisfactory state. 

An officer of the Government could not be required to 
account for past infringement, or enjoined against the 
future use of property in the possession of the Govern- 
ment claimed to infringe a patent. 

On the other hand, it has been held, though not yet by 
the highest court, that there may bean injunction against 
an officer of the Government from an apprehended, but 
not yet consummated, infringement. 

If a patented invention was used by the Government 
in defiance of the rights of the patentee, he was without 
remedy by suit against the Government. The more 
stoutly indeed did an officer using a patented invention 
den 3^ the rights of the inventor, the more completely did 
he bv his mere denial exonerate the Government from all 
responsibility. 

On the other hand, any acknowledgment by an officer 
of the patentee's rights and of the obligation of the Gov- 
ernment to make compensation for the use of the patent 
was sufficient to create a liability on the part of the 
Government. 

Thus the right of the inventor to be compensated for 
the use of his patented invention depended upon the 
sense of justice, the favor, or caprice of an officer of the 
Government ; instead of the meritorious question whether 
his invention had in fact been appropriated to the service 
of the Government. 



19 

liiability of the United States Under the Act. 

A. General. 

The main provision of this statute is as follows : 
That whenever an invention described in and 
covered by a i>atent of tlie United States shall 
hereafter be used by the United States with- 
out license of the owner thereof or lawful 
right to use the same, such owner may recover 
reasonable compensation for such use by suit 
in the Court of Claims. 

This act is the "amending statute of but a few 
words " which it was stated in the Schilling er case 
(loo U. S. 168, quoted ante, p. 16) would "remove all 
doubt" of the jurisdiction of the Court of Claims to 
award damages for the use of a patented invention by 
the Government. 

It substitutes for the uncertain and precarious remedies 
previously existing, a direct suit against the United States 
in all cases. 

The existing remedy established hj decision of the 
Supreme Court already covers cases w^here the Govern- 
ment has obtained "lawful right to use " the patented 
invention by express contract, and cases in which a tender 
and acceptance of "license of the ow^ner thereof" has 
created an implied contract. 

The act extends the remedy so as to cover all other cases 
of use by the Government. The mode in which such use 
has been entered upon, the position or dignity of the offi- 
cer or agent of the Government who has used the inven- 
tion, or the fact that the use may have been unintentional, 
or as the court said in the case of Wood v. United States, 
36 C. Cls. 418, 426, an "involuntary infringement, "are 
all immaterial. All that is required is that a patented 
invention "shall hereafter be used by the United States." 



20 

It would seem, too, that the use of a patented invention 
by a contractor with the Government, as well as by an 
officer of the United States, will give rise to a liability 
under this act. In the Schillinger case, 155 U. S. 163, 
where a contractor laid a pavement for the Government 
by a method which infringed a patent, it was conceded by 
the Supreme Court (top p. 172) that the acceptance and 
use of the pavement by the Government made it a joint 
infringer. And in the Brooks case, 39 C. Cls. 494, the 
patentee recovered damages from the Government for the 
use of his patented method of calking vessels by ship- 
builders constructing vessels for the Government under 
contract. 

B. Jurisdiction and Appeal. 

The jurisdiction conferred by this act is the same as 
that conferred by section 1059, Revised Statutes, or by the 
first section of the so-called Tucker Act, 24 Stat. L. 505. 
That is, it is a jurisdiction to render absolute and final 
judgment against the United States for a specific amount 
(United States v. Anderson, 9 Wall. 56, 71, 72; United 
States V. Irwin, 127 U. S. 125, 128, 129). 

From judgments under this act an appeal lies to the 
Supreme Court (Revised Statutes, §§ 707, 708; Ex Parte 
Zellner, 9 AVall. 244; Vigo's case, 21 Wall. 648) . 

By the rules of the Supreme Court, recognized and 
reaffirmed by Congress in the seventh section of the Tucker 
Act of 1887, 24 Stat. L. 506, the Court of Claims finds 
the facts from the evidence before it. These findings are 
conclusive on appeal in the Supreme Court, the evidence 
not being sent up. As was said in Desmare v. United 
States, 93 U. S. 605, 610: " The findings of the Court of 
Claims furnish the facts we are to consider, and we can 
not look beyond them. For the purposes of this case they 
import absolute verity and conclude both parties.' 



5J 



21 

Judgments of the Court of Claims are certified by the 
Secretary of the Treasury to Congress, as provided by the 
act of September 30, 1890, 26 Stat. L. 537; and their 
payment is regularly provided for in the annual defi- 
ciency appropriation acts. 

Executive ofiicers of the Government have ' ' no power 
whatever to go behind the judgment" of the Court of 
Claims. (United States v. Jones, 119 U. S. 477, 480; 
United States v. 0' Grady, 22 Wall. 641) . The judgment 
is '' made by the statute the final and indisputable basis 
of action " *' by Congress." {In re Sanborn, 148 U. S. 
222, 226.) 

No apprehension, therefore, need be entertained that the 
payment of any judgments obtained under this act will 
be neglected by Congress, as has been the case with the 
decisions of the Court of Claims in French Spoliation and 
other cases in which the action of the court takes the form 
of an award rather than of a judgment against the United 
States. 

The proceeding by presentation of the claim to Congress 
and reference by one house or a committee thereof to 
the Court of Claims for findings of fact, as previously 
explained {ante, pp. 16-18) , can still be resorted to in 
cases arising prior to the enactment of the new statute, 
and therefore not covered by its provisions. So, too, may 
it in cases arising in the future which are excluded from 
the benefits of the act, as in the case of inventions of 
employees of the United States. The result, how^ever, is 
not a satisfactory one; as in these cases which result only 
in findings of fact, ultimate relief is dependent entirely 
upon the will of Congress. 

C. Limitation of Six Years. 

Suits under this act are subject to the limitation of six 
years, created by Revised Statutes, section 1069, and re- 



22 

enacted in the proviso concluding the first section of the 
Tucker act (24 Stat. L. 505; Bice v. United States, 122 
U. S. 611, 619). 

Each separate manufacture of a patented article consti- 
tutes a cause of action, from the date of which the limita- 
tion begins to run. (Butler v. United States, 23 C. Cls. 
335; United States v. Berdan Fire Arms Cowpany, 156 
U. S. 552.) 

Section 1069 contains a proviso — 

' ' That the claims of married women first accrued dur- 
ing marriage, of persons under the age of twenty-one 
years first accrued during minority, and of idiots, luna- 
tics, insane persons, and persons beyond the seas at the 
time the claim accrued, shall not be barred if the petition 
be filed in the court or transmitted, as aforesaid, within 
three years after the disability has ceased; " etc. 

Section 1 of the Tucker act re-enacts the provision for 
a six-year limitation without re-enacting the above 
exemptions. 

It has, however, been judicially determined that the 
exemptions still remain in force. {United States v. 
Greathouse, 166 U. S. 601.) 

The most important of these exemptions for the pres- 
ent purpose is that of *' persons beyond the seas at the 
time the claim accrued." This gives some indulgence as 
to time for suing to foreign patentees who have not been 
in the United Slates. 

Wherever there is no person in existence qualified to 
sue at the time a claim accrues, the limitation does not 
begin to run until a legal representative is appointed. 
{Fuleniveider v. United States, 9 C. Cls. 403.) 

This rule may have an important bearing in the case 
of a patent infringed by the United States, after the death 
of the owner thereof, and before the granting of adminis- 
tration on his estate. It would seem that the six vears 



23 

would not begin to run till administration is taken out 
on the estate. 

D, Reasonable Compensation. 

The recovery under this act is to be of '^ reasonable 
compensation for such use." 

What constitutes reasonable compensation is a question 
that has been treated in the Court of Claims in the cases 
which have come up as one of considerable difficulty, 
owing to the fact that " these inventions are usually of 
devices, such for example as fire-arms, ammunition, or 
military equipments, not used by individuals." {Talheri 
V. United States, 25 C. Cls. 141, 158.) 

In the McKeever case, 14 C. Cls. 396, the court said 
(page 425) that the recovery should be of " such a royalty 
as it may reasonably be presumed the defendants w^ould 
have been willing to pay, and the claimant to accept, if 
the matter at the outset had gone to an express agreement. ' ' 

The court there said that the elements from which it 
must estimate damages were : (1) the manufacturer's price 
of the article; (2) that 20% of that price is ordinarily 
considered a fair royalty where the patent substantially 
covers the article sold; (3) that in this case the box was 
not made exclusively under the claimant's patent, but 
involved the right of another inventor; (4) that in the 
judgment of a competent expert 25 cents a box was a fair 
and reasonable royalty; (5) that the claimant has not 
manufactured under his patent, and has sold licenses in 
but two instances; (6) that in one of these instances, the 
manufacturer entered into a contract with the Govern- 
ment in ignorance of the claimant's patent, but later paid 
him a royalty, which he then fixed, of 25 cents a box ; ( 7) 
that under a similar contract with another party, he under 
the same circumstances paid the same royalty. 

In the case of Dahlgren, 16 C. Cls. 30, followed in 



24 

that of Talbert, 25 C. Cls. 141, 159, which was affirmed 
by 155 U. S. 45, the court said that it '' must find the 
measure of the claimant's compensation in the utility 
and advantage of the invention to the United States over 
the old modes or devices that had been used for working 
out similar results." 

In the Palmer case, 20 C. Cls. 432, the court distin- 
guished between inventions of established usefulness, and 
those still in the stage of trial and experiment as affording 
something of a test of the royalty which would have been 
fixed, if the matter had gone to an express agreement 
at the outset. 

In the Berdan Fire- Arms case, 26 C. Cls. 48, the court 
started out with the rule in the McKeever case that the 
compensation to be allowed was that which would have 
been agreed upon by the parties at the time, and said 
(page 80) : '' We must first place ourselves in the posi- 
tion occupied by the contracting parties in 1869, when the 
patent was issued. ' ' At that time it was said that ' ' there 
was then no element of certainty " (page 81) ; and that 
while twenty years later, the court might see that the 
device adopted was the best possible, yet they must fix 
the amount of royalty as of the date of the adoption of 
the invention b}^ the Government. This judgment was 
afiirmediby the Supreme Court, though with an intima- 
tion that if the court were not bound by the findings of 
the Court of Claims on a question of fact, a more liberal 
view might be taken as to the amount of damages (156 
U. S. 552, 574). 

In the case of Pasqueau, 26 C. Cls. 509, where a written 
agreement was drafted, but was not actually executed by 
the parties, the court adopted the amount named in the 
draft agreement as presumably that for which the use of 
the invention could have been obtained by the Government. 

In the case of Societe Anonyme des Anciens Etablisse- 



25 

ments Call, 43 C. Cls. 25, 61; 44 C. Cls. 610, the rule of 
compensation was thus stated : ' ' The measure of damages 
would be the value of the device to the defendants." 

All these decisions are as applicable to cases arising 
under the new law, as they were under the old ; and will 
serve to give some idea of the rules applied by the Court of 
Claims in the past, and which will presumably be applied 
in the future in ascertaining what constitutes ' ' reason- 
able compensation ' ' for the use of a patented invention 
by the Government. 

E. Assignment of Patents and of Claims. 

Assignments of patents, or of interests therein are pro- 
vided for bylaw, Revised Statutes, section 4898; and the 
assignee of a patent may sue thereon for all infringement 
occurring after the date of the assignment {Hendrie v. 
Sayles, 95 U. S. 546) . Several cases in which suits have 
in the past been sustained in the Court of Claims have 
been of assignees of patents. 

Assignments of claims against the United States are, 
however, prohibited by Revised Statutes, section 3477. 
It would seem therefore that accrued claims against the 
United States for the infringement of a patent would not 
pass either by a separate assignment thereof or by a gen- 
eral assignment of the patent and all interest therein. 
{St. Paul Railroad v. United States, 112 U. S. 733; Moore 
V. Marsh, 7 Wall. 515, 522.) 

This, however, would only apply to a suit under the 
general jurisdiction. There is nothing to prevent the 
assignee of a claim under a patent from presenting the 
claim to Congress, and having it referred to the Court of 
Claims for findings of fact. The assignment would simply 
constitute a matter of defense to be found with the other 
facts for the consideration of Congress. (Forehand v. 
United States, 23 C. Cls. 477, 482.) 



2e 

First Proviso. 

Articles Already in Possession of Government. 

That said Court of Claims shall not enter- 
tain a suit or reward compensation under 
the provisions of this Act where the claim 
for compensation is based on the use by the 
United States of any article heretofore owned, 
leased, used by, or in the possession of the 
United States. 

The verb "reward" in this proviso is synonymous 
with " oward," which was the word used in the bill as 
reported by the Committee on Patents. 

The opening or principal enactment provides compen- 
sation only in cases where the patented invention '' shall 
hereafter be used by the United States." This confines 
all benefit of the act to cases of future infringement. The 
proviso carries this policy one step further, and gives the 
Government the benefit of the use of any article already 
*' owned, leased, used by, or in the possession of the 
United States" free from any claim for compensation 
under the provisions of the act. 

The reason for this policy was stated by the House 
Committee on Patents in its report on this bill. House 
Report No. 1288, 61st Congress, 2d Session (page 4) : 

'' It was felt by the committee that the United States 
ought not to be compelled to discard and discontinue the 
further use of any article which it was using or had in its 
possession when the bill became a law. We intend only 
to provide under the terms of this bill that after its passage 
the United States should not make or acquire any new 
article which infringed a patented invention without giv- 
ing compensation to the owner of the patent for the use 
of such new article." 



27 

The word * ' article ' ' in this proviso evidently refers 
only to a completed product, already in use or capable of 
use at the date of the act. Hence, if the patent be for a 
method or process, the Government may not continue to 
use it without compensation, even though the Government 
may, at the date of the act, be in possession of the machin- 
ery or apparatus embodying the method, or of the raw 
material for manufacture. 

If the article is leased (as was the case with the stamp 
canceling device considered in International Postal Supply 
Co. Y. Bruce, 194 U. S. 601) it would seem that this act 
only contemplates continued free use to the end of an 
existing lease, and not for an indefinite time through 
renewal of the lease. 

This proviso does not stand in the way of suit upon any 
contract express or implied for the use of a patented 
invention which was made prior to the date of the passage 
of this act. The object of the present act is, as stated in 
its title, '* To provide additional protection for owners of 
patents of the United States," etc. This idea is elabora- 
ted in the report of the committee (page 3) : 

" It is not our intention to deprive the Court of Claims 
of any of the jurisdiction it now has to award compensa- 
tion to owners of patents who have contractual relations 
with the United States, express or implied, for the use of 
their invention. Our only purpose is to extend the juris- 
diction of that court so that it may entertain suits and 
award compensation to the owners of patents in cases 
where the use of the invention by the United States is 
unauthorized and unlawful; in short, to give the court in 
patent cases, in addition to the jurisdiction it now has in 
matters of contract, jurisdiction in cases of tort." 



28 

Second Proviso. 

Defenses of the United States. 

That in any such suit the United States 
may avail itself of any and all defenses, gen- 
eral or special, which miglit be pleaded by a 
defendant in an action for infringement, as 
set forth in Title Sixty of tlie Revised Stat- 
utes, or otherwise. 

This proviso seems only declaratory of the law as 
already established by judicial decision. True, in the 
case of Harvey Steel Company, 38 C. Cls. 669; 39 C. Cls. 
297; 196 U. S. 310, it was held that where the Govern- 
ment uses a patented invention under express contract, it 
may be estopped from setting up the invalidity of the 
patent. Where the contract, however, is only implied, 
from a tender and acceptance of a license to use the inven- 
tion, the Government has been held entitled to the bene- 
fit of all defenses, — such as anticipation, want of inven- 
tion or of novelt}^, or abandonment, — which might be 
pleaded by a private defendant in an action for infringe- 
ment. 

In the case of Morse Arms Company, 16 C. Cls. 296, 
303, the court said : 

** "Without entering upon a general inquiry as to the 
effect of acts of its officers upon the rights of the Gov- 
ernment, it is enough to say that the statutes which allow 
individuals to question the validity of a patent do not shut 
out the Government from the same right. The Govern- 
ment's rights are certainly as broad as those of the citizen. ' ' 

And the court, upon final hearing in that case, sustained 
the defense of anticipation (27 C. Cls. 363) . 



29 

Third Proviso. 

Inventions of Government Employees. 

Tiiat the benefits of this act sliall not 
inure to any patentee, v^^ho, when lie makes 
such claim is in the employment or service 
of the Government of the United States ; or 
the assig^nee of any such iiatentee ; nor shall 
this Act apply to any device discovered or 
invented by such employee during the time 
of his employment or service. 

There may be some question as to the scope of the exclu- 
sion made by this proviso, especially by the last clause. 
Is it limited to an "employee," who is specifically 
mentioned, or does it extend to an '' officer," who is not 
specifically mentioned? The two are quite different 
{United States v. Smith, 124 U. S. 525), and statutes 
relating to one do not always include the other. 
An act punishing extortion by an " officer of the United 
States " does not make the act criminal when committed 
by an employee {United States v. Germaine, 99 U. S. 
508) . A statute authorizing a board to fix the compen- 
sation of ' ' all employees ' ' gives it no power over that 
of an officer {People ex rel. Satterlee v. Board of Police, 
75 N. Y. 38,41). 

This question is here merel}^ suggested as one likely to 
arise under the act, but on which at this stage it would 
be premature to venture an opinion. 

The Attorney-General has given repeated opinions that 
agreements may and should be made with officers of the 
Government who make and patent inventions. (19 Ops. 
Atty. Gen. 407; 20 Ops. Atty. Gen. 329; 22 Ops. Atty. 
Gen. 10.) 

There seems to be an implied recognition of this right 
in the very exception which has been made in section 



30 

1673, Revised Statutes, providing that *' no royalty shall 
be paid by the United States to any one of its officers or 
employees for the use of any patent ' ' for ' ' the Spring- 
field breech-loading system." 

And the act of March 3, 1875, 18 Stat. L. 455, pro- 
vides : 

''That hereafter no money shall be expended at said 
armories in the perfection of patentable inventions in the 
manufacture of arms by officers of the Army otherwise 
compensated for their services to the United States." 

And still clearer in its implication as to the rights of 
officers of the Government (except those of the Patent 
Office, as to whom see Rev. Stat. § 480) to the full 
protection of letters patent is the provision of the act 
of March 3, 1883, 22 Stat. L. 625: 

'* The Secretary of the Interior and the Commissioner 
of Patents are authorized to grant any officer of the Gov- 
ernment, except officers and employees of the Patent 
Office, a patent for any invention of the classes men- 
tioned in section 4886 of the Revised Statutes, when such 
invention is used or to be used in the public service, with- 
out the pajanentof any fee: Provided, That the applicant 
in his application shall state that the invention described 
therein, if patented, may be used by the Government or 
any of its officers or employees in the prosecution of work 
for the Government, or by any other person in the United 
States, without the payment to him of any royalty thereon, 
which stipulation shall be included in the patent." 

This statute is merely permissive, and implies the right 
on the part of officers of the Government to take out a 
patent under the general law as if they were private 
citizens. 

By the act of February 18, 1893, 27 Stat. L. 461, it is 
provided that hereafter no person shall be a member of or 
serve on the Board of Ordnance and Fortification " who 
has been or is in any manner interested in any invention , 



31 

device, or patent which, or anything similar to which, 
has been considered or may be considered by or come 
before said Board for test or adoption." 

The three first cases which went to the Supreme Court, 
those of Burns, 4 C. Cls. 113, affirmed 12 Wall. 246; 
McKeever, 14 C. Cls. 396, affirmed 18 C. Cls. 757, and 
Palmer, 19 C. Cls. 669, 20 C. Cls. 432, affirmed 128 
U. S. 262, were cases in which officers of the Army 
were permitted to recover from the Government ; one under 
an express contract, each of the others under an implied 
contract, resulting from the tender and acceptance of a 
license for the use of an invention of military equipment. 

Later, however, in the case of Solomons, 137 U. S. 342, 
346, affirming 21 C. Cls. 479, and 22 C. Cls. 335, relief 
was denied for the use by the Government of an invention 
made and patented by an official of the Government on 
the following grounds : 

' ' The Government has no more power to appropriate a 
man's property invested in a patent than it has to take 
his property invested in real estate ; nor does the mere 
fact that an inventor is at the time of his invention in 
the employ of the Government transfer to it any title to, 
or interest in it. An employee, performing all the duties 
assigned to him in his department of service, may exer- 
cise his inventive faculties in any direction he chooses, 
with the assurance that whatever invention he may thus 
conceive and perfect is his individual property. There is 
no difference between the Government and any other 
employer in this respect. But this general rule is sub- 
ject to these limitations. If one is employed to devise or 
perfect an instrument, or a means for accomplishing a 
prescribed result, he can not after successfully accom- 
plishing the work for which he w^as employed, plead title 
thereto, as against his employer. That which he has been 
employed and paid to accomplish becomes, when accom- 
plished, the property of his employer. Whatever rights 
as an individual he may have had in and to his inventive 
powers, and that which they are able to accomplish, he 



32 

has sold in advance to his employer. So, also, when one 
is in the employ of another in a certain line of work, and 
devises an improved method or instrument for doing that 
Avork, and uses the property of his employer and the 
services of other employees to develop and put in practi- 
cal form his invention, and explicitly assents to the use 
by his employer of such invention, a jury, or a court 
trying the facts, is warranted in finding that he has so 
far recognized the obligations of service flowing from his 
employment and the benefits resulting from his use of 
the property, and the assistance of the co-employees, of 
his employer, as to have given to such an employer an 
irrevocable license to use such invention/' 

This rule was followed in three other cases which went 
to the Supreme Court: McAleer, 25 C. Cls. 238, affirmed 
150 U. S. 424; Gill, 25 C. Cls. 415, affirmed 160 U. S. 
426; and Harley, 39 C. Cls. 105, affirmed 198 U. S. 229. 
In all of these the rule just quoted from the Solomons 
case was reaffirmed and applied. 

The distinction taken in the Solomons case between the 
case of an employee making an invention in the very 
line of his employment, and using the property of his 
employer and the services of other employees to perfect 
his invention ; and the case of an employee independently 
exercising his inventive faculties has been preserved. 
This is clearly illustrated by the case of Talbert, 25 C. Cls. 
141 , where although the claimant was an employee of the 
Government, the making of his invention was held not to 
be '' a transaction growing out of plaintiff's official serv- 
ice or position " (25 C. Cls. 156) . Judgment was there- 
fore rendered in his favor for the use of his invention, 
and upon appeal was affirmed by the Supreme Court (155 
U. S. 45) . 

Whether this proviso goes beyond a mere declaration of 
the law as established by these decisions of the Supreme 
Court just referred to, or whether it places upon the right 



33 

of recover}' a new and important limitation is a question 
which can not well be answered in advance of judicial 
decision. 

Taken literally, the exclusion of "any device discov- 
ered or invented by such employee during the time of his 
employment or service ' ' might be broad enough to 
exclude from the benefit of the act any discovery or in- 
vention that an employee of the Government might 
make, even though neither the time nor the property of 
the United States were employed in perfecting the device. 

Yet discussing this very word " during," the Court of 
Claims has said : 

" Taken literally, the words of these decisions and this 
statute are applicable to the claimant's case, but statutes 
are to be interpreted so as to give effect to the purpose of 
the law-making power ; and to the legislative intent is to 
be ascribed a reasonable and not a technical meaning; 
and in ascertaining that meaning it is the duty of courts 
to consider the facts and circumstances which induce the 
legislation. The purpose of Congress in the legislation 
before us was not to fix by the words ' during the civil 
war ' dates at which the benefit of the statute should begin 
and end, but to bestow a suitable benefit upon actual 
officers who actually served in the civil war." 

So here, the words '' during the time of his employment 
or service ' ' may import some causal connection between 
the " employment or service " and the invention, rather 
than a mere coincidence of time. 

It is evident that there is nothing in this act which 
takes away either the power or the duty of the heads 
of departments to make express contracts with officers 
of the Government for the right to use their patented 
inventions. 

Such agreements are sustained not only by the opinions 
of the Attorney -General just cited, but by the Supreme 
Court in its decisions in the Burns, McKeever, Palmer and 
Talhert cases. 



84 

In 1907 Congress passed a joint resolution directing 
the Secretary of Commerce and Labor to investigate and 
report to Congress concerning existing patents granted to 
officers or employees of the Government in certain cases. 

The elaborate report of that officer, House Document 
No. 914, 60th Congress, 1st Session, shows the large 
number of such inventions, and the great amount of 
inventive genius which has been exercised by officers 
of the Government in devising improved methods in the 
military, naval, and other services of the Government. 

" The Bureau Vv^as informed by an inventor of fifty or 
more useful devices in the naval service that when he 
devoted his time and study to the development of inven- 
tions of use in the commercial world he met with decided 
financial success, but that his efforts and expense to 
develop devices of value to the Government had netted 
him a financial loss." 

And again: 

* ' On account of the unsettled state in which the matter 
rests it has become the custom for the government employee 
to dispose of his patent by sale to private parties, fre- 
quently at a nominal sum, or to voluntarity relinquish his 
rights to the Government, when at law he certainly could 
not be compelled to do so. In the former case, where 
patents are sold to private parties, the Government is 
compelled to meet the demands made upon it by the 
owner of the patent, whatever they may be, and in either 
case the employee-inventor is at a decided disadvantage 
from a financial point of view." 

The proviso before us does not declare any general 
policy in the case of inventions by government employees, 
simply providing that this act shall not " apply to any 
device discovered or invented by such employee during 
the time of his employment or service." Thus the law 
on the subject of inventions of government employees is 
not even yet clearly settled. 



35 

Conclusion. 

This legislation constitutes an important step forward 
in the recognition of the rights of patentees. 

Before the passage of this act the recovery of the pat- 
entee for the use of his invention hy the Government 
depended not so much upon the meritorious question 
whether his invention had been used by the Government 
and a benefit derived therefrom ; as upon the question 
whether the officer using the patent had had sufficient 
sense of justice to acknowledge that he was using the 
invention , and to make a promise of more or less distinct- 
ness that the Government would compensate the inventor. 
Where the officer was willing to make such an acknowl- 
edgment, the inventor might recover under it in the Court 
of Claims. Where the officer defiantly infringed the patent, 
refusing to recognize expressly or impliedly the rights of 
the patentee, there was no remedy. Such a distinction 
was obviously unworthy of perpetuation in the jurispru- 
dence of any civilized government. 

The remedy by injunction against the officer was very 
unsatisfactory. It turned w^hat should be regarded as an 
act of state on the part of the Government into a private 
tort of an individual. 

It is a much more enlightened public policy to allow 
the Government to avail itself with perfect freedom of the 
inventive skill of the world, subject only to the condition 
of the Fifth Amendment to the Constitution that the use 
of the inventor's property shall be accompanied by " just 
compensation . " 

Finally, the passage of this act can hardly fail to 
operate as a stimulus to inventors for the exercise of their 
genius in perfecting inventions which will be of value to 
the Government; particularly, in those lines in which, 
as in the case of heavy ordnance, armor plate, and other 
military and naval equipment; and to nearly the same 



36 

degree in improvements in light-houses, postal devices, 
and many other lines, the invention can be of little or no 
value to any one but the Government. 

The passage of this act was not obtained without stren- 
uous opposition in the House of Representatives. For 
overcoming such opposition, and placing this simple, but 
effective, measure of justice upon the statute book great 
credit is due to those members who advocated and secured 
its adoption. Among these may be specially mentioned 
Hon. Frank D. Currier, of New Hampshire, Chairman of 
the Committee on Patents, whose able report. House 
Eeport No. 1288, 61st Congress, 2d Session, is a 
clear and convincing presentation of the reasons for the 
enactment Of the bill; Hon. Edmund H. Hinshaw, of 
Nebraska, who reported a similar bill in the 60th Con- 
gress, and took part in the report of the committee of the 
61st Congress; Hon. Irvine L. Lenroot, of Wisconsin, 
who, as a member of the committee, joined in the report 
and also supported it on the floor of the House; Hon. 
Edgar D. Crumpacker, of Indiana; Hons. Marlin E. 
Olmsted, James F. Burke and William H. Graham, of 
Pennsylvania; Hon. Henry A. Cooper, of Wisconsin; 
Hon. Eugene F. Kinkead, of New Jerse}^; all of whom 
took part in the debate; and Hon. John Dalzell, of Penn- 
sylvania, the original proposer of this legislation in Con- 
gress, who also earnestly advocated it upon the floor of 
the House. 

In the Senate the bill was reported from the Committee 
on Patents by its chairman, Hon. Norris Brown, of 
Nebraska, taking the place of a similar Senate bill pre- 
viously reported by Hon. Frank B. Brandegee. In 
previous Congresses the bill had been reported by 
Hon. Philander C. Knox, now Secretary of State. 

Credit is also due to Hon. Edward B. Moore, Com- 
missioner of Patents, who made an able report to the 



37 

Secretary of the Interior, for the use of the Committee 
on Patents, reviewing the decisions in this country and 
comparing them with the legislation of foreign countries 
on this subject, and earnestly recommending the enact- 
ment of the legislation. 

Lists are appended to this paper as follows: 

1. Opinions of the Court of Claims in cases growing 
out of the use of patented inventions by the United States ; 
showing also the action of the Supreme Court in appealed 
cases. 

2. Opinions of the Supreme and other courts in suits 
against officers of the United States for infringement of 
patents. 

3. Opinions of the Attorneys-General on the same sub- 
ject. 



38 

Appendix. 

List of Opinions of the Court of Claims in Cases 
Growing Out of the Use of JPatented Inven- 
tions hy the United States ; Showing Also 
the Action of the Supreme Court in Appealed 
Cases, 

To avoid useless repetition, the name of the claimant only is given, 
omitting the words *' v. The United States." 

Pitcher, 1864.— -1 C. Cls. 7. Patent on machine for 
making brooms. No jurisdiction of case of infringe- 
ment unaccompanied by contract. 

Burns, 1869.-4 C. Cls. 113; affirmed, 1871, 12 Wall. 
246. Poyalty awarded under an express contract 
for use of patented invention of army officer for tent. 

Shavor, 1869. — 4 C. Cls. 440. For use of Norton natent 
for postmarking letters and cancelling stamps. 
Claimant held to have consented to use by the Gov- 
ernment without compensation unless awarded by 
Congress. 

HuBBELL, 1870. — 5 C. Cls. 1. Compensation awarded 

for use of patent on fuses in fire-arms ; referred by 

special act. 
Fletcher, 1876.— 11 C. Cls. 748. Suit on patented 

revenue stamp. Claimant's invention held not to 

have been used. 

McKeever, 1879.— 14 C. Cls. 396; affirmed without 
opinion, 1883, 18 C. Cls. 757. Patent of army officer 
on cartridge-box used in army. A leading case on 
use of patented inventions b}^ the Government, and 
particularly full on the measure of damages. 

Dahlgren, 1881. — 16 C. Cls. 30. Claim of naval officer 
for patented gun used in the Navy; referred by 
special act. Damages awarded. 

Morse Arms Company, 1881. — 16 C. Cls. 296; on final 
hearing, 1892, 27 C. Cls. 363. Claim for use of 
patented breech-loading rifle. Patent held not to be 
infringed by Government. Opinion 16 C. Cls. 296, 
is particularly full on the question of the right of 



39 

Government to set up same defense as might be 
available to private defendants. 
Henry, 1884.— 19 C. Cls. 120; 1887, 22 C. Cls. 75; 
1903, 38 C. Cls. 635. Claim for royalty on pro- 
jectiles used in the Navy. Held that no implied 
contract existed. 

Pacific Wall Company, 1884.— 19 C. Cls. 234. Claim 
for use of patented method of bonding walls in gov- 
ernment building. Held that the method employed 
by the Government did not infringe the patent. 

Palmer, 1884.— 19 C. Cls. 669; 1885, 20 C. Cls. 432; 
affirmed 1888, 128 U. S. 262. Claim of army offi- 
cer for use of patented knapsack. Held that offer 
of claimant and acceptance thereof by the United 
States constituted an implied contract and compen- 
sation awarded. 

HuBBELL, 1885.— 20 C. Cls. 354; affirmed 1900, 179 
U. S._ 77. See also 171 U. S. 203. Patented inven- 
tion in fire-arms held not to be infringed by the 
United States. 

Solomons, 1886.-21 C. Cls. 479; 1887, 22 C. Cls. 335; 
affirmed 1890, 137 U. S. 342. Revenue stamp 
invented and patented by Chief of Bureau of Internal 
Revenue Office. Held that no action would lie for 
use as invention was in line of officer's duty. 

Davis, 1888.-23 C. Cls. 329. Same principle. Lock 
for breech-loading cannon invented and patented by 
government employee. 

Butler, 1888.-23 C. Cls. 335. Patent for hook attach- 
ment for stacking fire-arms used in the Army. 
Implied contract held to arise merel}^ from a general 
usage by the War Department ; compensation 
awarded . 

Forehand, 1888.— 23 C. Cls. 477. Use of patented 
invention without consent of patentee held not to 
constitute implied contract. This case was referred 
to the court merely for a finding of facts under the 
first section of the Bowman Act, 22 Statutes at Large, 
485, and the court held that it acquired jurisdiction 
under such a reference to find the facts for the infor- 
mation of Congress. 



40 

ScHiLLiNGER, 1889.— 24 C. Cls. 278; affirmed 1894, 155 
U. S. 163. Use of a patented invention by the Gov- 
ernment without contract or Hcense constitutes a tort 
of which the Court of Claims has no jurisdiction. 

Talbert, 1890.— 25 C. Cls. 141; affirmed 1894, 155 
U. S. 45. Improvement in marine railwaj^s invented 
by government employee before entering the service, 
but patented w^hile in the service . Case referred to 
Court of Claims by special act. Held that as the 
invention was made at a time when the claimant was 
not in the Government employ, he was not debarred 
from recover}^ by the fact of his service. 

McAleer, 1890.-25 C. Cls. 238; affirmed 1893, 150 
U. S. 424. Machine invented and patented by 
mechanic in the Bureau of Engraving and Printing, 
Treasury Department. Held that claimant is not 
entitled to compensation, being in the Government 
employ, and also on account of having granted a 
license for the use of the invention free of charge. 

Berdan Fire Arms Company, 1890. — 25 C. Cls. 355; 
26 C. Cls. 48; affirmed, 1895, 156 U. S. 552. Pat- 
ent for improvements in fire-arms. Contract created 
by offer of license by patentee and acceptance by gov- 
ernment officer, coupled with general policy of War 
Department. Particularlv full discussion of '' reason- 
able compensation," 26 C. Cls. 79-82. 

Gill, 1890.-25 C. Cls. 415; affirmed, 1896, 160 U. S. 
426. — Improvements in fire-arms patented by em- 
ployee in government arsenal. Held that on account 
of inventor being in government employment, the 
Government was entitled to gratuitous use of his 
invention and no contract could be implied. 

Pasqueau, 1891.-26 C. Cls. 509. Foreign citizen held 
entitled to recovery for use by the Government of his 
invention covered by United States letters patent for 
improvements in the construction of movable dams, 
there having been negotiations between the patentee 
and the officers of the United States Army reaching 
the point of a draft of agreement not fully executed. 

Thomson, 1891. — 27 C. Cls. 61. Patent for improvement 



41 

in mail bags. Held that the one used b}^ the Gov- 
ernment was not identical with the invention of the 
claimant. 

Kirk, 1893.— 28 C. Cls. 41, 276 ; affirmed 1896, 163 U. S. 
49. Patent for improvement in street letter boxes. 
Held that there could be no recover}^ because the box 
used by the Post Office Department was alleged by 
the Department not to infringe the patent, thus 
excluding all implication of contract. 

Eelton, 1897.— 32 C. Cls. 314. Improvements in fire- 
arms invented and patented by army officer. Held 
that the fact of his official position prevented a 
recovery. 

Eager, 1898.— 33 C. Cls. 836; 1900, 35 C. Cls. 556. 
Improvements in rifling machines for heavy ordnance 
invented and patented by employee in navy yard 
and used in both Army and Navy. Held that 
there could be no recovery; the invention being by 
a government employee and there being no contract, 
express or implied, on the part of the officers using 
the same to pay royalty. 

CosTON, 1898. — 33 C. Cls. 438. Improvements in gun 
signals. The patentee was an officer in the Marine 
Corps. The Navy Department used a gun signal 
alleged to be covered by a patent of an officer in the 
Navy and under contract with such naval officer. 
Held that there was no contract, express or implied, 
with the claimant ; but if there was an infringement, 
it was a mere tort and therefore there could be no 
recovery. 

Hartman, 1900. — 35 C. Cls. 106. Improvements in car- 
bine holders alleged to have been used in the Army. 
Held that as all the use took place more than six 
vears before the bringing of the action, the claim 
was barred by limitation. 

Russell, 1900.— 35 C. Cls. 154; affirmed, 1901, 182 
U. S. 516. Improvement in fire-arms, devised and 
patented by United States Army officers. The War 
Department, with full notice of the patent, entered 
into a contract with a company, whose fire-arms were 



42 

claimed to infringe the patent, for the manufacture 
and delivery of arms, embodying in the contract a 
stipulation for an indemnity in case of establishment 
of a claim against the United States for the infringe- 
ment of any patent. Held that the acts of Govern- 
ment amounted to an infringement of the patent, 
unaccompanied by any contract and, therefore, there 
could be no recovery. 

Dashiell, 1901. — 36 C. Cls. 115. Breech-loading mech- 
anism invented and patented by officer of the United 
States Navy. Held that there being no contract, 
express or implied, to pay anything for it, there was 
a mere infringement and there could be no recovery. 

Wood, 1901.— 36 C. Cls. 418. Improved electric light 
buoy alleged to be used in the United States light- 
house service. Although the invention was brought 
to the notice of the Lighthouse Board, it used a buoy 
which it claimed differed from the patented device. 
Held that ' ' it was a case of involuntary infringement ' ' 
which ' ' can not be turned into a case of implied 
contract. '' 

Sprague, 1902.— 37 C.Cls. 447. Employee of the Engi- 
neer Department, United States Army, invented and 
patented a lock for fastening bolts in masonry which 
was used in the course of river and harbor improve- 
ments by the Government. Held that although the 
officers of the Government were notified of the patent 
and used it with such notice, yet their refusal to pur- 
chase the right to use the patent constituted the 
transaction an infringement of the patent, and that 
there was no contract, express or implied, and, there- 
fore, no suit would lie. 

Harvey Steel Company, 1903.— 38 C. Cls. 662; 1904, 
39 C. Cls. 297; affirmed, 1905, 196 U. S. 310. Suit 
upon written contract for royalties for use of pro- 
cess for treatment of armor plate for use in the con- 
struction of vessels. Held that by the contract the 
Government was estopped from contesting the valid- 
ity of the patent. 

Harley, 1903. 39 C. Cls. 105; affirmed, 1905, 198 



43 

CJ. S. 229. Improvement in printing press invented 
and patented by employee in the Bureau of Engraving 
and Printing. Held there could be no recovery for 
the use on account of the patentee being in the 
service of the Government. 

Brooks, 1904.— 39 C. Cls. 494. Improved method of 
calking vessels used by contractors for building ves- 
sels for the Navy and Lighthouse Board. The Gov- 
ernment had notice of the patent ; and in the contracts 
for the construction of these vessels there was a clause 
requiring the contractor to pay royalties for any pat- 
ented invention which might be used, or to indemnify 
the Government for any demands on account thereof. 
Held that these facts constituted an implied contract 
of the Government to compensate the owner of the 
patent for the use. 

Beach, 1906. — 41 C. Cls. 110. Improvements in mode 
of pneumatic transportation alleged to be used by 
Post Office Department. The Government advertised 
for pneumatic tubes, asking proposals for license. 
The claimant answered the advertisement, fixing his 
price for a license. The court refused to find either 
that the claimant was the first inventor of the pat- 
ented device or that his invention was used by the 
Government, and therefore decided adversely to his 
claim. Case pending on appeal in the Supreme 
Court. 

Bethlehem Steel Company, 1907. — 42 C. Cls. 365. 
On demurrer to a petition which alleged that patents 
had been issued for improvements in breech mechan- 
ism for ordnance; that the patents had been 
assigned to the claimant ; that letters had passed 
between officers of the Ordnance Department and the 
claimant looking to the use of the invention and re- 
sulting in the claimant granting to the Government 
the right to use the invention in one trial gun with- 
out compensation, and that the Government used the 
invention in a number of guns which it subsequently 
manufactured. Held that these facts constitute an 
implied contract upon which the Government is 
liable. Case still pending in the Court of Claims. 



44 

Federal Manufacturing and Printing Co. 1907. — 
42 C. Cls. 479. Patent for improvements in steam 
plate-printing presses alleged to be used by the Gov- 
ernment in the Bureau of Engraving and Printing. 
Case decided in favor of the United States ; partly on 
the ground of sale and public use of the article for 
more than two years prior to the date of application 
for patent, and partly because the right to use the 
patented invention was covered by another license 
from the patentee, the royalty upon which had been 
fully paid by the Government. 

SociETE Anonyme des Anciens Etablissements Cail, 
1907.— 43 C. Cls. 25; 44 C. Cls. 610. Invention 
made by French citizen and patented in the United 
States for gas checks used in breech-loading cannon. 
Claimant was invited to present the details of his 
patent to a board of officers appointed to investigate 
such inventions. He did so present it and the 
patented invention was used without claim of owner- 
ship on the part of the Government. These facts 
were held to constitute an implied contract. Case 
pending in the Supreme Court on appeal. 



List of Opinions of the Supre^ne and other 
Courts on Suits against Officers of the United 
States for Infringement of Patents, 

Heaton v. Quintard, 1869. Fed. Case No. 6311. 

It was claimed that a patent for armor plate was being 
infringed in the construction of the vessels for the 
Navy Department. Held, that workmen and employees 
of the Government can not be held liable for infring- 
ing a patent by doing said work ; this being in effect 
to allow the Government itself to be sued under the 
guise of a suit against its workmen. 

Cammeyer v. Newton, 1877. 94 U. S. 225, affirming Fed. 

Case No. 2345 (see also Fed. Case No. 2344). 

Patent for mode of blasting rocks under water claimed 

to be infringed in operation carried on under the 

direction of the defendants, officers of the Engineer 



45 

Corps of the Army. Held, that as agents of the 
public have no more right to use a patented inven- 
tion without a license from the owner of the patent 
than private individuals have, the only question 
before the court was one of infringement. As the 
patent Avas held not to be infringed, judgment was 
for the defendant. 

James Y. Campbell, 1882. 104 U. S. 356, reversing decis- 
ions below : Fed. Case No. 2361 ; 2 Fed. Rep. 338 ; 
3 Fed. Rep. 513; 5 Fed. Rep. 806; see also 31 
Fed. Rep. 525. 
Suit against the Postmaster of New York for infringe- 
ment of the Norton patent for postmarking letters 
and cancelling stamps. Held, that the question of 
instituting an action against a public officer, who 
acts only for the Government, is open to serious objec- 
tion ; that there is doubt whether such action can be 
sustained ; that the proper forum for such a claim is 
the Court of Claims, but that the reissued patent sued 
on was void both because it was an undue expansion 
of the claim of the original patent, and also for want 
of novelty. 

(Other bills based on this patent dismissed on special 
grounds: Secombe v. Campbell, 2 Fed. Rep. 357; 5 
Fed. Rep. 804; Campbell v. Ward, 12 Fed. Rep. 
150.) 
Forehand v. Porter, 1883. 15 Fed. Rep. 256. 

Suit against the master armorer of the United States 
Armory for infringement of patent for cup and drill 
cartridge. Held, that the patent was infringed, and 
accounting ordered against the defendant. 
Atlantic Works v. Brady, 1883. 107 U. S. 192, reversing 
Fed. Cas. Nos. 1794, 1795. 
The circuit court granted an accounting against a 
contractor alleged to infringe a patent in the course 
of construction of a dredge boat for the Government. 
Its opinion discusses the rights of patentees against 
the Government and its officers. The Supreme Court 
without reviewing this question, reverses the decree 
on the ground that the patent is void for want of 
novelty and invention. 



46 

Hollister v. Benedict Manufacturing Company, 1885. 113 
U. S. 59, 'reversing 4 Fed. Rep. 83. 
Suit against Collector of Internal Revenue for 
infringement of patent for revenue marks or labels. 
Held, that the proper tribunal for such claim was 
the Court of Claims ; but that the patent was void as 
lacking in invention. 

Head v. Porter, 1891. 48 Fed. Rep. 481. 

Suit against the master armorer of the United States 
Armory for infringement of patent for improvements 
in breech-loading fire-arms. Held, that a suit would 
lie against the officer of the United States for infringe- 
ment of the patent, although used in carrying on the 
operations of the Government. 

Belknap v. Schild, 1896. 161 U. S. 10. 

Suit against officer of the Navy to restrain infringe- 
ment of a patent used in the caisson gate of a dry 
dock at a navy -yard. Held, that as the bill seeks to 
interfere with the possession and use by the United 
States of its own property, it can not be sustained. 

Dashiell v. Grosvenor, 1896. 162 U. S. 425, affirming 
66 Fed. Rep. 334, and reversing 62 Fed. Rep. 584. 
Suit against officer of the Navy, for infringement of 
patent in the manufacture of guns under a contract 
with the Government. The circuit court granted an 
injunction as prayed. The circuit court of appeals 
reversed the decree on the ground that it was an inter- 
ference with the operation of the Government ; and 
this judgment was affirmed by the Supreme Court, 
but on the ground that the patent was not infringed. 

International Postal Supply Company v. Bruce, 1904. 
194 U. S. 601, affirming 114 Fed. Rep. 509. 
Suit against postmaster to restrain infringement for 
stamp cancelling and post-marking machines, by use 
of certain leased machines in post office. Held, that 
as the injunction asked for would restrain the United 
States from the use of its own property, it could not 
be granted. 

Krupp Co. V. Crozier, 1908. 32 App. D. C. 1. 

Suit by foreign owner of United States patent for 



47 

field guns and carriages against the Chief of Ord- 
nance, U. S. Army, to restrain future infringement 
of patent. Bill sustained on the ground that it did 
not seek to interfere with the possession or use of any 
existing property of the United States, and "that, 
unless the relief sought is granted, plaintiff's patents 
will be valueless in the United States, since they are 
of use to the Government alone." 
Pending in the Supreme Court on certiorari. 

Haupt V. WrigJit, 1909. 32 App. D. C. 408. 

Suit against Secretary of War to restrain infringe- 
ment of patent for a system of dikes, jetties, and 
breakwaters to deepen channels. Injunction refused 
on the ground that it would interfere with the pos- 
session by the United States of its own property. 

List of Opinions of Attorneys -General Rela- 
tive to the use of JPatented Inventions 
by the United States* 

1859. 9 Ops. 332, 349. — Claim based on infringement 
of patent for wagon floats or pontoons as used in the 
Army. The Engineer Department of the Army, as 
well as the Patent Office, reported that the pontoons 
used in the Army were not identical wdth those cov- 
ered by the patent; and this was held by the Attor- 
ney-General to be conclusive against the claim. 

1877. 16 Ops. 136.— ''Officers of the United States 
(like private citizens) , when they use articles w^hich 
are made in violation of the rights of patentees, are 
liable to suit." Held, therefore, that if there is rea- 
son to believe that an article furnished under con- 
tract infringes a patent, the contractor should be 
required to furnish security to the officers of the 
Government to indemnify them against suits for 
infringement. 

1889. 19 Ops. 407. — Held, that Lieutenant Dunn of the 
Navy Department, having invented and patented a 
new form of anchor, is entitled to compensation from 
the Government in case of the use thereof ; he neither 



48 

having been employed especially to make experi- 
ments with regard thereto, nor any facilities fur- 
nished him by the Government to enable him to 
perfect his invention. 

1892. 20 Ops. 329.— An officer of the Navy, Ensign 
Dashiell, obtained a patent on improvements in 
ordnance. Held, that if the Government desired to 
use the same, a contract might and should be made 
with him for the use thereof. 

22 Ops. (1898) 10, puts a construction upon the 
contract made with said Dashiell, holding that it 
permitted the Government to manufacture the guns 
in its own shops only, but not to contract with other 
parties for their manufacture. 
1894. 21 Ops. 9Q.—Held, that no suit will lie against 
the Government for an infringement of a patent ; 
but it will lie against a contractor with the Govern- 
ment manufacturing in infringement of a patent. 

1909. 27 Ops. 17S.— Held, that the Secretary of the 
Navy is authorized to acquire and pay for the right 
to manufacture and install on board a ship patented 
forms of machinery, including license fee, royalty, 
and preparation of drawings. 

1909. 27 Ops. S20.— Held, that in view of the fact that 
a certain patent was being very generally resisted, 
the War Department should not recognize its vahdity, 
although it had been sustained by a circuit court of 
appeals; and that in any case the War Department 
has no authority to adjust claims for past infringe- 
ment. 

1909. 28 Ops. 52. — Held, that a cartridge-case extractor 
manufactured in accordance with a certain patent, 
would not be an infringement upon another patent 
therein named, as it did not include all the elements 
of the combination of the latter patent. 



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